CannaVest Corp. v. Jan Everno / The Management Group II
Claim Number: FA1509001637467
Complainant is CannaVest Corp. (“Complainant”), represented by Heather A. Cameron of Procopio, Cory, Hargreaves & Savitch LLP, California, USA. Respondent is Jan Everno / The Management Group II (“Respondent”), Michigan, USA.
REGISTRAR AND <CIBADERM.COM> DOMAIN NAME
The domain name at issue is <cibaderm.com>, registered with EUTurbo.com LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2015; the Forum received payment on September 11, 2015.
On September 15, 2015, EUTurbo.com LLC confirmed by e-mail to the Forum that the <cibaderm.com> domain name is registered with EUTurbo.com LLC and that Respondent is the current registrant of the name. EUTurbo.com LLC has verified that Respondent is bound by the EUTurbo.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cibaderm.com. Also on September 17, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns the CIBADERM mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,653,757, registered Dec. 9, 2014). Complainant uses the CIBADERM mark in connection with its business of developing, marketing, and selling raw oil and end-consumer products containing agricultural hemp-based compounds.
2. The <cibaderm.com> domain name is identical to the CIBADERM mark. The domain name simply adds the generic top-level domain (“gTLD”) “.com” to the domain name to the fully incorporated CIBADERM mark. The <cibaderm.com> domain name was registered April 27, 2015.
3. Respondent has no rights or legitimate interests in respect of the <cibaderm.com> domain name. Respondent is not commonly known by the domain name, nor has Respondent been associated with the CIBADERM mark. Further, Complainant has never authorized Respondent to use the CIBADERM trademark.
4. Respondent’s lack of rights or legitimate interests in the <cibaderm.com> domain name is made evident by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the <cibaderm.com> domain name to divert Internet traffic seeking Complainant’s legitimate website to websites that compete with Complainant.
5. Respondent has engaged in bad faith registration and use of the <cibaderm.com> domain name. Respondent is a serial domain name registrant and has engaged in a pattern of such behavior. Respondent’s use of the domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CIBADERM mark. Respondent’s domain name is confusingly similar to Complainant’s CIBADERM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <cibaderm.com> domain name, and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's un<cibaderm.com> representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant owns the CIBADERM mark which is registered with the USPTO (e.g., Reg. No. 4,653,757, registered Dec. 9, 2014). Complainant uses the CIBADERM mark in connection with its business of developing, marketing, and selling raw oil and end-consumer products containing agricultural hemp-based compounds. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
Complainant argues that the <cibaderm.com> domain name is identical to the CIBADERM mark. The domain name contains Complainant’s mark in full and simply adds the gTLD “.com” to the domain name. The mere addition of a gTLD does not serve to distinguish the <cibaderm.com> domain name from the CIBADERM mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As such, this Panel determines that the <cibaderm.com> domain name is identical to Complainant’s CIBADERM mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain name at issue in this proceeding. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent has no rights or legitimate interests in the <cibaderm.com> domain name. Complainant claims that Respondent is not commonly known by the <cibaderm.com> domain name, nor has Respondent been associated with the CIBADERM mark. Further, Complainant states that it has never authorized Respondent to use the CIBADERM trademark. Additionally, the WHOIS information for the <cibaderm.com> domain name lists “Jan Everno / The Management Group II” as the registrant of record. Lacking any contentions from Respondent refuting these allegations, the Panel agrees that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the <cibaderm.com> domain name according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
According to Complainant, Respondent’s lack of rights or legitimate interests in the <cibaderm.com> domain name is made evident by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant urges that Respondent uses the <cibaderm.com> domain name to divert Internet traffic seeking Complainant’s legitimate website to websites that compete with Complainant. Complainant claims that Respondent’s resolving website features competing hyperlinks. Indeed, some of the hyperlinks reached through Respondent’s resolving website include “Shampoo,” Hemp,” and “Natural Body Soap.” The use of hyperlinks to redirect Internet users to a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Thus, the Panel finds that Respondent has failed to establish a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the <cibaderm.com> domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant alleges that Respondent’s pay-per-click links resolve to websites that feature products that compete with Complainant, such as <garnierus.com/shampoo> and <honest.com/hair-shampoo>. These links divert potential customers away from Complainant to third-party websites, which is disruptive to Complainant’s business and which constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The <cibaderm.com> domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). As a result, the Panel finds that Respondent’s conduct is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant alleges that Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant argues that, as Respondent’s website features pay-per-click hyperlinks, Respondent presumably receives revenue through click through fees. As such, Complainant argues that Respondent has registered and used the <cibaderm.com> domain name in bad faith under Policy ¶ 4(b)(iv) by using the <cibaderm.com> domain name to mislead consumers for profit. Such conduct has been found by other panels to demonstrate bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the <cibaderm.com> domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Thus, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cibaderm.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 19, 2015
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